Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Eleonora Rosati, Annsley Merelle Ward, Neil J. Wilkof, and Merpel. Nicola Searle is currently on sabbatical. Read, post comments and participate! E-mail the Kats here

The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy

Friday, 9 January 2015

Tufty and the tale of the "poisonous provisionals". It is always with a mixture of pleasure and excitement that this Kat clicks through to the weblog of his friend, blogging colleague and emeritus IPKat team member Tufty, who has picked up on a recent development involving patent applications under the European Patent Convention (EPC) and "poisonous provisionals" [on which see earlier Katposts here and here]. Anyway, Tufty's blogpost explains:

I have written a few times in the past about the issue of partial priority under Article 88 EPC, and in particular how it relates to the issue of so-called 'poisonous' divisionals and priority ...

... in my view the only way to resolve the poisonous priority issue would be for a referral to be made to the EPO Enlarged Board. ... That case has now appeared.

In appeal proceedings for T 557/13 (Infineum), relating to EP0921183 (see the EP register here), the Board of Appeal have recently decided to refer one or more questions to the Enlarged Board of Appeal. As yet, the only indication of this is the minutes of the oral proceedings that were held on 17 December 2014, and no questions have yet been decided on, although there are some suggestions. The questions will, however, most certainly be about the extent to which partial priority can be claimed and what effect this has on priority applications becoming prior art under Article 54(3) EPC.

Tufty then goes on to explain the issue in more depth and to list the proposed questions. Readers may also want to take a look at this quick-off-the-mark briefing note by Glyn Truscott (Carpmaels & Ransford). This Kat will continue to watch and wait: he promises he'll try to bring word once the real action begins.

Genericisation: who is an expert? The World Trademark Review blog carries a post, "Kimberly-Clark decries Wikipedia ‘misinformation’ in battle against genericide", by Tim Lince, which will resonate with many successful brand-driven businesses. In this post Tim writes, of Kimberly-Clark:

The company’s assistant general counsel of trademarks, Aimee Zaleski, ... [said]: “We believe that educational efforts directed towards the media and advertising industry are instrumental in promoting correct use of the Kleenex brand name in media broadly. We also work to educate employees and our ad agency partners about proper brand use in order to make sure that as a brand owner we are taking all the rights steps to keep the KLEENEX trademark a brand name in the minds of our consumers.”

"Kleenex": clearly a trade mark here

However, one of the challenges faced by Kimberly-Clark is the flood of misinformation online that claims that Kleenex is already a generic brand. For example, the Wikipedia page for Kleenex currently states: “In the USA, the Kleenex name has become, or as a legal matter nearly has become, genericised”. This creates an uphill battle for Kimberly-Clark, who laments: “Unfortunately the Internet is rife with misinformation and inaccuracy, so it was not surprising to see the Wikipedia page that seems skewed towards commentary rather than fact. I think it is still questionable as to whether Wikipedia can be considered a source of reliable, factual information, particularly when anyone, even someone who is not an expert in the related field or someone who wants to spread misinformation, can contribute to entries.” However, she confirms: “Kimberly-Clark, of course, does try to correct misuse of the Kleenex brand and misinformation where and when we find it.”

This raises an interesting point in that it assumes that there is such a thing as an expert in whether a word or term has become generic, whether among consumers at large or within trade circles. This Kat, who is a firm believer in trade marks and in educating the public in their proper use, considers himself to be something of an expert on trade marks and brands for reasons that he is happy to substantiate if necessary -- but he would never dream of holding himself out as an expert on whether words used as trade marks are also used as generic terms by the vast majority of people in the world who are not trade mark experts and are only qualified as normal human beings. He hears people use trade mark-registered words pretty well on a daily basis and often "corrects" them, for all the good it does -- but it is the use of the consuming public that makes a word a generic term or a distinctive term, whatever we experts might like to think.

Hot topic, round table. From Katfriend Tilman Müller-Stoy, amused by the two recent Katposts [here and here] on where in London the Divisional Court of the Unified Patent Court might be placed, comes the suggestion that we take note of this link to the EPLAW Patent Blog relating to the public statements (including "a collage with a twinkle") of the Munich UPC round table (this being an informal round table of Munich patent litigators, judges and scientists who meet about every two months to discuss "hot" UPC topics) about the location of the Munich UPC divisions. Merpel wonders what his German friends and colleagues could have found to discuss, seeing as Munich is such an easy and congenial city for even patent litigators and their clients to navigate, whether sober or, er, inspired ...

6 comments:

Anonymous
said...

Thanks for the report on the Enlarged Board referral. Hopefully the parties will allow the matter to go to a decision to help clarify this issue. I see the BoA referred to the decision t 0571/10 during the written procedure, presumably to illustrate diverging opinions on this topic.

I note that the patent which was the subject of the appeal T 557/13 has now expired without the BoA coming to a written decision and without the matter having been referred to the Enlarged Board. Presumably in the circumstances, the EB will take the easy option and allow the matter to fade away gracefully even if the BoA ever get round to writing their decision, the hearing having been more than six months ago now. Shame!

They've asked whether the G2/98 proviso "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters" is the correct legal test for assessing entitlement to partial priority for a generic OR-claim.

And they've referred a question about the applicability of Art. 54(3) EPC as well as partial priorities.

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